151 Content of the Statements [R-11.2013]

The law requires the statement to set forth “the full facts” surrounding the
conception and making of the invention. These facts should include those which are unique
to that invention. The use of form paragraphs or printed forms which set forth only broad
generalized statements of fact is not ordinarily regarded as meeting the requirements of
these statutes.

The word
"applicant"
in both of these
statutes is construed by the Office to mean the inventor or joint inventors in person, or
an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary
interest in the matter. Accordingly, in the ordinary situation, the statements must be
signed by the inventor or the joint inventors, or an assignee, obligated assignee, or a
person who otherwise shows sufficient proprietary interest in the matter if available. This
construction is consistent with the fact that no other person could normally be more
knowledgeable of the
"full facts concerning the circumstances under
which such invention was made,"
(42 U.S.C. 2457) or, “full facts
surrounding the making or conception of the invention or discovery” (42 U.S.C. 2182). If a
request under 37 CFR
1.48 for correction of inventorship is granted during pendency of an
application in which a property rights statement has been filed, a supplemental statement
executed by any added inventor(s) is required and should promptly be filed with Licensing
and Review.

In instances where an applicant does not have firsthand knowledge whether
the invention involved work under any contract, subcontract, or arrangement with or for the
benefit of the Atomic Energy Commission, or had any relationship to any work under any
contract of the National Aeronautics and Space Administration, and includes in his or her
statement information of this nature derived from others, his or her statement should
identify the source of his or her information. Alternatively, the statement by the
applicant could be accompanied by a supplemental declaration or oath, as to the contractual
matters, by the assignee or other person, e.g., an employee thereof, who has the requisite
knowledge.

When an inventor applicant is deceased or legally incapacitated, or where it
is shown to the satisfaction of this Office that he or she refuses to furnish a statement
or cannot be reached after diligent efforts, declarations or statements under oath setting
forth the information required by the statutes may be accepted from an officer or employee
of the assignee who has sufficient knowledge of the facts. The offer of such substitute
statements should be based on the actual unavailability of or refusal by the applicant,
rather than mere inconvenience. Where it is shown that one of the joint inventors is
deceased or unavailable, a statement by all of the other inventor(s) may be accepted.

The following is an acceptable format for statements to DOE or NASA assuming
that no government funds or other considerations were involved in the making or conception
of the invention. It is important that the information provided in the statement be an
accurate reflection of the fact situation at the time the statement is made. While the
sample below is in the form of a declaration, a sworn oath is equally acceptable.

Note that the statement must be in the form of an oath or declaration.
Further note that the statement must be signed by all the inventors.
See also the notice entitled “Statements Filed Under Atomic Energy Act and NASA Act”
published in 914 OG 1 (Sept. 4, 1973) for further information.

I (We) _____________________ citizens of residing at declare: That I (we)
made and conceived the invention described and claimed in patent application number
filed in the United States of America on titled.

I (We) ________________ citizens of ________________ residing at
________________ declare: That I (we) made and conceived the invention described and
claimed in patent application number ________________ filed in the United States of
America on ________________ titled ________________.

(Include completed I. or II. below)

I. (for Inventors Employed by an Organization)

That I (we) made and conceived this invention while employed by
________________.

That the invention is related to the work I am (we are) employed to
perform and was made within the scope of my (our) employment duties;

That the invention was made during working hours and with the use of
facilities, equipment, materials, funds, information and services of
________________.

Other relevant facts are: ________________.

That to the best of my (our) knowledge and belief based upon information
provided by ________________ of ________________:

-OR-

II. (For Self-Employed Inventors)

That I (we) made and conceived this invention on my (our) own time using
only my (our) own facilities, equipment, materials, funds, information and services.

Other relevant facts are ________________

That to the best of my (our) knowledge and belief:

(Include III. and/or IV. below as appropriate)

III. The invention or discovery was not made or conceived in the course
of, or in connection with, or under the terms of any contract, subcontract or
arrangement entered into with or for the benefit of the United States Atomic Energy
Commission or its successors Energy Research and Development Administration or the
Department of Energy.

-AND/OR-

IV. The invention was not made under nor is there any relationship of the
invention to the performance of any work under any contract of the National Aeronautics
and Space Administration.

V. The undersigned inventor(s) declare(s) further that all statements
made herein of his or her (their)own knowledge are true and that all statements made on
information and belief are believed to be true and further that these statements were
made with the knowledge that willful false statements and the like so made are
punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the
United States Code and that such willful false statements may jeopardize the validity of
the application or any patent issuing thereon.